Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Merpel, Jeremy Phillips, Eleonora Rosati, Nicola Searle, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

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Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 15 October 2004

Last Thursday the ECJ provided further guidance on how to judge whether shape marks are distinctive. Though the IPKat briefly noted the case, here’s a bit more detail. Mag applied to register five shapes of torch as Community trade marks for flashlights, lighting and accessories for those goods. The examiner found the marks to be devoid of distinctive character, as did the Board of Appeal. Mag unsuccessfully appealed to the CFI, following which it appealed to the ECJ, arguing in particular that the high quality of the design of its torches, and the fact that many shaped goods were available on the market would cause consumers to view the shape of its torches as distinctive. Mag also argued that there were flaws in the way that the CFI treated the evidence of distinctiveness that it presented.

The ECJ dismissed the appeal:

* Instead of separating the marks in question into their component parts the CFI had considered the overall impression given by each of the marks. Thus Mag’s contention that the CFI had failed to assess the distinctiveness of each mark seen as a whole was not well founded.

* Mag’s argument that that the mere fact that a shape was a “variant” of a common shape of a type of product was sufficient for it to be distinctive under Art.7(1)(b) of the CTM Regulation was flawed. Although the criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of a product are the same as those that apply to other categories of trade marks, consumers are not used to making assumptions about the origin of a product on the basis of its shape and so as a matter of consumer perception shapes may be less likely to be seen as trade marks than word of figurative marks. Thus, the more closely the shape applied for resembles the shape most likely to be taken by the product in question, the greater the likelihood that the shape will be devoid of distinctive character. Only marks which depart significantly from the norm or customs of the sector, and which therefore fulfil the essential function of indicating origin, will not be devoid of distinctive character.

* Contrary to Mag’s argument, the CFI had not taken the view that consumers would, as a matter of principle, fail to recognise the shape of goods as an indication of their origin.

* Mag’s argument that the wide variety of designs leads consumers to notice the shape of goods and thus the variations that may arise in the design of goods of different origins was inadmissible because it sought to have the ECJ substitute its own appraisal of the facts and evidence for that of the CFI.

* Although the assessment for the purposes of Art.7(1)(b) must be carried out in relation to the presumed expectations of the average consumer, evidence based on the actual perception of the mark by consumers may, in certain cases, provide guidance as long as that evidence shows that consumers did not need to become accustomed to the mark through the used made of it. Instead, it must have immediately enabled them to distinguish the goods or services bearing the mark from the goods or services of competing undertakings. The CFI did not fail to take into account the evidence of the actual perception of consumers. However the evidence presented only focused on consumer perceptions after the torches in question had been on the market for many years and when consumers were therefore accustomed to their shape. Also, Mag itself had accepted that the evidence could have related to consumer perception that was caused by use in the trade.

* The CFI could hold that the evidence presented only showed that the marks in question may have become distinctive in consequence of the use which had been made of them without distorting the evidence.

* The CFI had not failed to take into account Mag’s evidence that the torches possessed distinctive character because of the functional and aesthetic qualities of their shapes and their atypical designs. It had considered these features of the torches but had not considered them sufficient to confer distinctiveness on the marks. Instead, the CFI found that the evidence as to the excellence of the design and aesthetic and functional qualities of the torches showed that the marks might only become distinctiveness because of the use made of them rather than that they possessed distinctive character ab initio.

* The CFI was not bound to agree with the evidence of the expert appointed by Mag. Instead it was entitled to undertake its own appraisal of the distinctiveness of the marks in question.

* The fact that the design of the torches enjoyed international recognition as a result of its high quality did not mean that the marks were distinctive ab initio.

* The CFI was entitled to refuse to hear the author of the expert’s report produced by Mag. The CFI is the sole judge of any need for the information available to it concerning the cases before it to be supplemented and this matter cannot be reviewed by the ECJ unless there is the clear sense that evidence has been distorted or the substantive inaccuracy of the CFI’s findings is apparent from the documents in the case file. In this case, the CFI, by deciding that it was not necessary to hear the expert witness for the purpose of appraising the distinctive character of the marks, did not infringe Mag’s right to be heard.

* The CFI’s failure to take into account other evidence produced by Mag in which it claimed to show that other manufacturers use a very wide variety of torch shapes and that the marks in question can be clearly distinguished from all those shapes could not be challenged in the absence of any evidence of distortion of the facts or evidence as it would involve challenging the CFI’s appraisal of the facts.

* Mag was wrong to argue that the CFI contravened Art.7(1)(b) by basing its reasoning in finding that the marks lacked distinctiveness only on general propositions which were unsupported by any evidence. The CFI’s position that consumers were not used to viewing the shapes of goods as distinctive of their origin and therefore that it was harder to show that three-dimensional marks were distinctive could not be challenged in so far as it was a finding of fact. In any event. The CFI’s findings were supported by evidence and its appraisal of the facts could not be reviewed unless the facts or evidence submitted to the CFI had been distorted.

The IPKat says that there are no real surprises in this case. However, one notable point to come from this case is that the ECJ has quantified exactly how different from other shapes on the market a three-dimensional mark must be to be distinctive.

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Gama and Pal: is the wet-wipe packaging confusingly similar?

Yesterday morning the IPKat posted this item on an ongoing passing-off action, Gama Healthcare Ltd v Pal International Ltd. in which Gama objected that Pal's wet-wipe packaging would lead people to think it was theirs.

When that Katpost went live, there were no examples of the parties’ packaging to show readers. The Kats have since received images of both, which they reproduce below, and they ask readers, through the medium of the sidebar poll below, if they think that Pal's packaging might be mistaken for Gama’s one.

Pal's packs are sold under the Medipal brand and Gama's are sold as Clinell products.

Caveat: this poll is conducted purely for the amusement of readers of this weblog. It is not mandated by the trial judge or commissioned by either party; it is not based on any methodology and it is not intended to have any evidential value at all.

Wet-wipe packaging: do you think you could pick up a packet of Medipal, thinking it was Clinell?

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